1. Overview of the Madrid System for the International Registration of Marks Roving Seminar on WIPO Services and Initiatives
Kui Wou KWUN Director-Advisor
WIPO Academy World Intellectual Property Organization
Seoul, Daejeon
July 16-17, 2019 1

2. Options for protecting a trademark
The national route
The regional route
The international route: The Madrid Protocol
Which option to choose, depends on a number of factors and in particular, the export markets of interest

3. The International route: The Madrid System
The Madrid System may be the preferred option when you:
Seek protection in multiple markets
Want to add new markets as your export plans develop
Have limited budget and/or time to manage your trademarks

4. What is the Madrid System?
One-stop shop for trademark holders to obtain and maintain protection in export markets (a centralized filing and management system)
One application, one language, one set of fees for protection in multiple markets = bundle of national rights
Expand protection to new markets as your business strategy evolves

5. The Madrid System is Global
Currently: 121 countries covered by 105 members
Markets cover more than 70% of the world population
Recent accessions include:
2017: Thailand and Indonesia
2018: Afghanistan, Malawi and Samoa
2019: Canada, Brazil

6. The Madrid System is Global
Currently: 121 countries covered by the 104 members
Markets cover more than 70% of the world population
Recent accessions include:
2017: Thailand and Indonesia
2018: Afghanistan, Malawi and Samoa
2019: Canada, Brazil

7. Africa: South Africa
Arab region: Jordan, Qatar and the United Arab Emirates
Asia: Bangladesh, Malaysia, Pakistan, Papua New Guinea and Sri Lanka
Europe: Malta
Latin America and the Caribbean: Chile and Trinidad and Tobago

8. Key Features The Madrid System is a closed system
Entitlement (real and effective industrial or commercial establishment/domicile/national)
Registration or application (basic mark) in your Office of origin
The international application must be filed through the Office of origin
Formalities examination by WIPO
Designated members decide the scope of protection
Fixed time limit for refusal – 12 or 18 months/18 months+

9. Key Features… cont.
Possible to expand the geographical protection to new export markets (subsequent designation)
Possible to tailor the list of goods and services (G&S)
Centralized management directly with WIPO
Renewal and recording of changes to IR
Replacement
Dependency – Ceasing of effect – Transformation
National/regional mark and IR must be in the name of same holder
Protection of the IR must extend to said dCP
The goods and services in the national/regional mark must be listed in the IR (partial replacement is possible)
The IR must take effect after the date of the national/regional registration
Holder’s responsibility to satisfy all conditions
Replacement will take place automatically
Holder may request the national/regional Office (dCP)to take note of the IR
The Office will notify WIPO where it has taken note
WIPO will record the fact in the International Register
The national/regional registration remains unaffected on the Register (unless it is not renewed)
Advisable to renew national/regional mark within the dependency period of IR

10. The International Trademark Registration Process

11. The costs Handling fee to the Office of origin, if required
Fees are payable to WIPO in Swiss francs
Basic fee (653 CHF/903 CHF)
Fees for designated Contracting Parties (dCP):
Standard fees OR
Individual fees, where this is declared
* Applicants from Least Developed Countries benefit from a 90% reduction in the basic fee

12. Being a Member of the Madrid System
Being a member of the Madrid System may have an impact on the
Local businesses and industries (the trademark owner)
The Office and the government
The local attorneys and agents

13. Benefits for local businesses/trademark owner
Various options for trademark protection
The Madrid System facilitates easy access to potential export markets
One application, one language, one currency
Possible to designate all possible members
One Madrid application = bundle of national rights

14. Benefits for local businesses/trademark owner.. .cont.
No translation costs due to multiple languages or working through the administrative procedures of multiple IP Offices
One international registration with one renewal date
There is no requirement for supporting documents
Centralized management of portfolio
Its possible to add countries when business expands (allowing costs to be staggered)

15. The Office and government
Where it is the Office of origin:
It empowers local industry, in particular the SMEs
Provides easier access to export markets
Promotes international trade and further development of export
Where the Contracting Party is designated:
Simplified examination in the Office
Provides more favorable climate for foreign investment
More filings means economic growth 15 15

16. Role of the local attorneys and agents
Develop trademark strategies for local clients/businesses
Assist with national applications
Advise and assist on options for protection abroad
Assist foreign clients with enforcing rights in the country
Act on their behalf towards the Office
Respond to refusals and file oppositions (increased substantive work)
Initiate cancellation actions

17. Statistics 2018

18. International Applications
Figure A.1.1 Trend in international applications ( )
March 19, 2019updated
Source: WIPO IP Statistics Section

20. Top 20 Filing Origins (2018)

21. Top 20 Designated Contracting Parties

22. Republic of Korea Member of Madrid System since April 10, 2003
Republic of Korea ranks 14th (1,305 filings) in 2018
First (still active) mark filed on April 10, 2003 based on a basic mark dated 2001.
SAMSUNG ELECTRONICS CO., LTD. 
416, Maetan-dong, Paldal-gu 
Suwon city, Kyungki-do  (KR)

23. Top 10 Applicants – Republic of Korea (2018)
SAMSUNG ELECTRONICS CO., LTD (73)
LOTTE CORPORATION (42)
LG HOUSEHOLD & HEALTHCARE LTD (30)
AMOREPACIFIC COPORATION (28)
COUPANG CORP (28)
TEMTREE CO., LTD (27)
HYUNDAI MOTOR COMPANY (14)
BODY FRIEND CO., LTD. (13)
PUBG CORPORATION (10)
SEOUL SEMICONDUCTOR CO., LTD. (9)

24. Top 10 Contracting Parties designated by Korean holders
United States of America 759
Japan
China
Viet Nam
EUIPO
Thailand
Singapore
Indonesia
Russian Federation 403
Philippines

25. Top 10 Contracting Parties designating the Republic of Korean (2018)
United States of America 2936
China
Germany
Japan
France
Italy
Switzerland
United Kingdom 746
Australia
Spain
Who is designating Korea

26. Online Resources and E-Services

27. Online Resources and E-Services
Global Brand Database
search existing marks from national & international sources
trademarks, appellations of origin and official emblems
Madrid Goods & Services Manager
compile a list of approved goods & services terms in 18 languages
Member Profiles Database
Fee Calculator
Madrid Monitor
track real-time status of registration
watch competitors’ marks
e-alerts
consult the WIPO Gazette
Madrid Portfolio Manager
access documents
request changes
modify, designate & renew
pay fees
obtain extracts

28. Madrid Goods & Services Manager
Compile and verify the list of goods and services required for an international application
Nice Classification class headings, terms and explanatory notes
Over 100,000 indications in English
Compile and translate your list in 20 languages
Check acceptance of terms by WIPO and 35 participating Offices
ASIAN similar group codes used by Japan and the Republic of Korea

29. Recent and Upcoming Developments

30. Recent Developments
Division and/or Merger of an International Registration possible since February 2019
Useful where some of the goods/services have been refused and the holder wishes to avoid delay in progressing the registration in respect of the acceptable goods/services.
Contracting Parties can opt-out if their domestic legislation does not provide for division or merger, or the new rules are not compatible with their applicable domestic laws (Republic of Korea has opted out).
As of February 1, 2019: Introduction of division and merger of IRs
Division: Possible to divide an IR before a CP only
New Rule 27bis and new mandatory form MM22
Fees to WIPO (177 CHF) and possibly to the Office concerned
Will result in new international registration – using same number + add a letter (A, B, etc.)
+ 30 Offices will not present requests for division
More information in Information Notice 2018/21
Merger of IRs resulting from partial change in ownership
New Rule 27ter(1) and new mandatory form MM23
Merger of IRs resulting from division
New Rule 27ter(2) and new mandatory form MM24
No fee to WIPO but some Offices may require a fee
Will be merged with the IR it was divided from
+ 45 Offices will not present requests for merger

31. Future Developments
February 1, 2020: The Common Regulations will change name to the Regulations under the Protocol
Possible introduction of more languages (currently English, French, Spanish)
Introduction of more E-forms (currently e-renewal and e-subsequent designation

32. Keep updated on the Madrid System
Visit the Madrid Website
Register to free
Madrid Webinars
Subscribe to Madrid Notices,
our legal and news updates
Sign up for Madrid Highlights

33. Thank you
for your attention